Argentina
Argentine
Argentinien
Report Q167
in the name of the Argentinean Groupby Ricardo Richelet, Daniel de las Carreras, Alicia Alvarez de Berkenwald,Carlos Alonso and Martín Bensadon
Current standards for prior art disclosure in assessing noveltyand inventive step requirements
1.Determination of prior art
1.1What is the effect of a prior art disclosure on novelty and inventive steps? Are there differences between prior art regarding novelty on the one hand and inventive step on the other hand? Do pending applications which have not yet been published affect the assessment of novelty and inventive step?
A prior art disclosure before the filing date or priority date may render the invention unpatentable for lack of novelty or lack of inventive step.
In principle there are no differences established in Argentine legislation between prior art regarding novelty on the one hand and inventive step on the other hand (Section 4 of the Argentine Patent Law No. 24,481, as amended, hereinafter, the "Argentine Patent Law").
Section 4 of the Argentine Patent Law does not provide that pending applications not yet published, which are later on published, may affect the assessment of novelty and inventive step applications with a later filing date. In any event, according to Section 15 of the Argentine Patent Law, to avoid double patenting for applications filed in the same jurisdiction, priority is given to the applicant that first filed the application.
1.2Do the national laws give definitions or indications as to what constitutes a prior art disclosure?
Section 4 of the Argentine Patent Law does not define the term "disclosure". In any event, paragraph b) of said Section provides that "(l)ikewise, all inventions not included the state of the art, will be considered novel."
Section 4, Subparagraph c, defines prior art ("estado de la técnica") as "... all technical knowledge which has become public before the date of filing of the patent application, or, if applicable, of the recognized priority, by way of oral or written description, by use, or by any other means of disclosure or information, in the country or abroad."
1.3Which guidelines are used to determine whether a piece of prior art has been disclosed? This question focuses on guidelines other than those given by law which have been developed in the various countries for determining a disclosure.
There are no guidelines other than those given by law in Argentina for determining when a piece of prior art has been disclosed. In any event, it is not unusual for Argentine examiners to informally follow the guidelines of the European Patent Office.
2.Criteria for disclosure
2.1Means of disclosure
What are recognised means of disclosure? Are there additional requirements for certain types of disclosure, such as oral disclosure or disclosure by use, when compared to disclosure through written documents? If certain means of disclosure are not recognised either by law or in practice, what are the reasons?
The Argentine Patent Law (Section 4, Subparagraph c) recognises as acceptable means of disclosure:
(a)oral or written descriptions;
(b)use;
(c)any other means of disclosure or information.
The Argentine group considers that the Argentine Patent Law definitions are so broad in connection with disclosure, that no means of disclosure should be considered as not recognised by law.
There are no additional requirements for certain types of disclosure, such as oral disclosure or disclosure by use, when compared to disclosure through written documents.
2.2Time of disclosure
Does it matter if a disclosure has been made recently or a long time ago? Are there limits beyond which the publication of a piece of information, although it constitutes a prior art disclosure, is no longer relevant for the assessment of novelty and inventive step?
The only relevant date pursuant to the Argentine Patent Law is the date of application or the priority date. As long as the disclosure was made before such dates, the knowledge or information disclosed will be considered to be a prior art disclosure. To be sure, evidence on the existence of such disclosure should be available.
2.3Place of disclosure
Is the place of disclosure relevant? How is the place of disclosure determined? Does it make a difference if the disclosure has happened in that country accidentally as opposed to intentionally? Which is the applicable law for determining whether a disclosure has occurred (the law of the country in which the information was disclosed or the law of the country in which novelty and inventive step are assessed)?
Section 4, subparagraph c of the Argentine Patent Law expressly provides that the disclosure may happen "in the country or abroad". Accordingly, the place of disclosure is not relevant for the Argentine Patent Law with respect to patents.
However, in respect to utility models, Section 55 of the Argentine Patent Law requires that a model must be new and have an industrial nature, but the lack of inventive merit or the fact that it is known or has been disclosed abroad shall not constitute a bar for obtaining protection thereon. Thus, the place of disclosure seems to be relevant for utility models. Nevertheless, Section 55 of the Decree regulating the Law sets forth that the novelty of the utility model will not be lost provided that it is the applicant himself that has disclosed the model or made it known abroad and only within six months prior to filing the application in Argentina. Thus, according to the regulatory decree, if the model was disclosed abroad - but not in Argentina, according to Section 55 of the Patent Law - by applicant himself, and the application is filed within six months of the disclosure, novelty is not affected.
The applicable law for determining whether a disclosure has occurred is the Argentine Patent Law, regardless of the country where the information was disclosed.
2.4Personal elements
What differences do the Groups observe with regard to the person who discloses the prior art? Is the disclosure treated differently if the disclosing person was bound by a confidentiality agreement? How are errors in the disclosed information treated?
Section 5 of the Argentine Patent Law provides that "The disclosure of an invention shall not affect its novelty, when within one year prior to the date of filing the patent application, or, if applicable, of the recognized priority, the inventor or his lawful successors have disclosed the invention by any means of communication or have exhibited the same in a national or international fair. ..."
Therefore, if the disclosure was made by the inventor or his successors within the one-year grace period, the novelty and inventive step of the invention will not be affected. Novelty and inventive step would be affected if such disclosure is made by any other person.
If the disclosing person was bound by a confidentiality agreement, the Argentine group is of the opinion that the disclosure should not be taken into consideration for novelty and inventive step purposes. There are not express provisions in Argentine legislation, nor any relevant case law in Argentina as regards this particular issue.
There are no precedents either in connection with errors in the disclosed information. In any event, the Argentine group is of the opinion that the nature of such errors would be decisive, namely, whether such errors would implicate that the disclosure did or did not effectively occurred. That, to be sure, should be determined on a case by case basis.
2.5Recipient of the information
What requirements are there with regard to the ability to understand the information? Is the possibility that a person might obtain the information through additional steps, such as disassembly of embodiments or reverse engineering sufficient to constitute a disclosure? Are there general rules providing for the effect of confidentiality or implied confidentiality?
There are no express provisions or guidelines regarding the ability to understand the information by the recipient. In any event, the Argentine group is of the opinion that the Patent Office or the Courts would consider that there was a disclosure, even if the recipient could not understand the information, especially if the recipient could further disseminate the information without limitations.
As provided by Section 4 of the Argentine Patent Law, use of the invention, even if it is not possible to understand the invention, will be considered to be prior art affecting novelty and inventive step. If reverse engineering or disassembly of embodiments were necessary to obtain the information, the Argentine group believes that disclosure would not be considered to have occurred, unless there was an effective use of the invention.
There are no specific rules providing for the effect of confidentiality or implied confidentiality agreements. In any event, the Argentine group is of the opinion that if the information is disclosed under an explicit or implied confidentiality agreement, disclosure for prior art purposed should be deemed as not having occurred. As stated in the answer to question 2.4., if the agreement is breached and the information is released to the public, disclosure would be considered to have occurred, with the ability of the inventor to seek damages from the person breaching the implied or explicit confidentiality.
3.Disclosure through new media
3.1General rules
Does a paperless information, e.g. in an electronic network or through the internet, constitute a sufficient disclosure to affect novelty or inventive step? Are there specific requirements compared to other forms of disclosure? Are there differences with regard to various forms of networks or communications, such as the Worldwide Web, chat groups or forums, e-mail and others?
As explained in question 2.1., Section 4, c, of the Argentine Patent Law expressly provides that any means of disclosure is acceptable.
There are no specific requirements for disclosure through paperless information, such as the one existing in electronic networks or on the internet.
With respect to the various forms of networks or communications, such as the Worldwide Web, chat groups or forums or e-mail, the relevant issue would be whether a disclosure has occurred according the general rules for any type of disclosure. Section 4, c, of the Argentine Patent Law only provides that the information must have "become public." If the information was made available to the public through any of the above mentioned means without limitations, then disclosure would have occurred.
Certainly, the level of accessibility to the network should be taken into account to determine whether the information became public or not. For instance, encrypted of private e-mail should not in principle be considered as prior art. However, there could be a grey area when the recipient could use the information without any type of restraints or confidentiality limitations, especially in such cases where such e-mail communications were effectively further legally disseminated.
3.2Questions of confidentiality
Does it make a difference if the information is encrypted? What relevance do passwords, search engines and payment requirements have?
Encryption of the information may be relevant if it impedes that the information becomes public. The same applies for passwords.
It does not seem a necessary requirement for the existence of disclosure the fact that the information is made available to the public through the use of search engines. As long as the public has the ability to accede to that information without limitations through other means, disclosure should be considered to have happened, regardless of whether or not there has been actual access.
A simple payment requirement does not seem to impede access to the information by the public, and therefore should not be considered a bar to the existence of disclosure.
3.3Place of disclosure
What is the place of disclosure if information is put on the internet? Is the mere fact that a web-site can be accessed in a certain place sufficient for a disclosure in that place or should there be additional conditions or requirements?
As explained in the answer to question 2.3., the place of disclosure ("in the country or abroad") is not relevant for the Argentine Patent Law as regards patents.
For utility models, there are no rules regarding what is the place of disclosure if the information is put on the internet, nor is there any especial condition or requirement in that respect. In any event, the Argentine group is of the opinion that the mere fact that a web-site can be accessed in Argentine should be considered to be sufficient local disclosure.
3.4Timing of disclosure
Are there certain requirements for the timing and the duration of information available through electronic means? Are archives necessary or desirable?
There are no specific requirements regarding the timing and duration of information available through electronic means. The Argentine group is of the opinion that as long as the information was available long enough so as to become available to the public, the duration should be considered sufficient. That should be determined on a case by case basis.
The creation of archives keeping all information that was at any time available to the public on the internet, or through any other electronic means, is an idea that seems difficult and probably expensive to put into practice.
3.5Questions of evidence
Who should have the burden of proof that a specific piece of information was disclosed on the internet? Does the internet require rules different from those already existing for oral disclosure or the disclosure in other ways? Should there be different levels of evidence for different ways of disclosure? Does the potential manipulation of information disclosed through new media require different standards for the recognition of such disclosure and are there specific rules for this kind of disclosure?
The principle should be that the burden of proof rests on the Patent Office during the prosecution of a patent application, or on the party who claims the nullity of the patent for lack of novelty or inventive step. In any event, if applicant (in the prosecution of application) or the plaintiff (in nullity cases) has that information easily available for him, then the burden of proof could shift to them.
Internet does not seem to require rules different from those already existing for oral disclosure or other ways of disclosure. In any event, the most difficult issue seems to appear when it is necessary to determine the precise date on which the information was published on the internet, especially in those cases in which the information is not available any longer at the time when the existence of novelty or inventive steps has to be determined.
Cases of manipulation of information through new media do not seem to require different standards than those existing for any other means of disclosure.
Summary
Under Argentine Patent Law, the existence of disclosure is construed very broadly. Disclosure may occur by way of oral or written description, by use, or by any other means, including new media such as the internet. There are, however, no precedents or express guidelines in connection with disclosure through new media. Therefore, many issues related therewith, such as questions of evidence, accessibility and duration of the information, will have to be considered on a case by case basis.
Zusammenfassung
Unter dem Argentinischen Patentgesetz, die Existenz der Veröffentlichung ist ausführlich ausgelegt. Die Veröffentlichung kann durch mündlicher oder schriftlicher Beschreibung, durch Verwendung, oder durch andere Weisen, wie Internet, stattfinden. Es gibt aber keine Vorfahren oder Regeln in Beziehung mit Veröffentlichung durch neue Weisen. Deswegen, viele Fragen in dieser Hinsicht, wie Fragen über Evidenzmittel, Zugang und Dauer der Information, sollen für jeden Fall beantwortet werden.
Résumé
Aux termes de la Loi des Brevets argentine, la possibilité de révéler un secret industriel est analysée d'une manière générale et vague. La révélation des secrets pourrait arriver en forme d'une description orale ou écrite, pour l'usage, ou par quelque moyen, inclus l´Internet. Il n´y a pas des précédents ou des expresses guides relatives à la révélation des secrets avec des nouveaux " media " moyens. En conséquence, beaucoup des aspects comme des questions de preuve, des possibilités d´accès a l´information et sa durée, devrons être considérés dans chaque cas.
Australia
Australie
Australien
Report Q167
in the name of the Australian Group
Andrew Massie, Michael Dowling, Wayne Condon and Peter Franke
Current standards of prior art disclosure in assessing noveltyand inventive step requirements.
A.Introduction
Patents Act 1990 (Cth) (the Patents Act) and the Patents Amendment Bill 2001 (the Patents Bill)
a)When this Report is considered at Lisbon in June 2002, changes proposed to the treatment of prior art under the Patents Act will have come into force as at 1 April 2002 under the Patents Bill. We report the “before and after” positions in Australia because the evolution of the patent law here may be of assistance to others in determining harmonized positions internationally.
b)The tests for novelty and inventive step require comparison of the claimed step with prior art bases defined by statute for each respectively. The tests both for novelty and inventive step will be more stringent by expansion of the data included in the respective prior art bases of those tests.
c)There will be a higher burden of proof on an applicant to establish novelty and inventive step. Under the Patents Act before April 2002, an applicant is given the benefit of doubt. Under the Patents Bill, the applicant is required to demonstrate that the subject is new and inventive on the balance of probabilities.
What are the main principles with regard to the relationship between disclosure, novelty and inventive step?
d)The Patents Act specifies the tests to determine novelty and inventive step. Both novelty and obviousness require that the data taken into account as relevant prior art must have been disclosed. What amounts to disclosure is determined by common law decisions which are dealt with in Section 1 below.
Pre April 2002
e)The prior art base for novelty is documented information published anywhere world wide or information arising from an act done in Australia. This is a standard partly international and partly local.
f)As to inventive step, the prior art base is basically the common general knowledge (CGK) in the relevant field in Australia. The effect of CGK may be considered on its own or together with documents published anywhere in the world, or with each particular piece of information which arose through doing an act in Australia.